Ex Parte Kawano et al

Patent Trial and Appeal Board

Feb 12, 2016

12497997 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/497,997 0710612009
23389 7590 02/17/2016
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
FIRST NAMED INVENTOR
Hironao Kawano
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
23014Z 7607
EXAMINER
LEUBECKER, JOHN P
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
02/17/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Docket@SSMP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIRONAO KAW ANO and
KATSUYOSHI TANIGUCHI
Appeal2013-010595
Application 12/497,997
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
15.1 We have jurisdiction under 35 U.S.C. § 6(b).
1 As dependent claims include all the limitations of the independent claim
from which they depend (35 U.S.C. § 112, fourth paragraph), when an
independent claim is indefinite claims depending therefrom will usually also
be indefinite. As there does not appear to be any language in the dependent
claims that resolves the ambiguities identified by the Examiner with regard
to the independent claim, we presume that the Examiner's omission of the
dependent claims from the rejection under 35 U.S.C. § 112, second
paragraph, was inadvertent.
Appeal2013-010595
Application 12/497,997
We summarily affirm the Examiner's uncontested rejection under 35
U.S.C. § 112 and do not reach the merits of the Examiner's prior-art
rejections.
The claims are directed to a system for guiding a capsule medical
device. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for guiding capsule medical device, comprising:
a capsule medical device that includes a capsule casing
capable of being introduced into a subject and including therein
an imaging unit for imaging an in-vivo image of the subject and
a permanent magnet magnetized in a direction relatively fixed
with respect to an upward and downward direction of an imaging
surface of the imaging unit, the capsule medical device having a
center of gravity deviated from a geometric center of the capsule
casing toward a direction different from a magnetization
direction of the permanent magnetic, wherein a first plane
parallel to the imaging surface of the imaging unit and a second
plane parallel to the magnetization direction of the permanent
magnet and a deviation direction of the center of gravity with
respect to the geometric center form an intersection line so that
the second plane is parallel to a vertical direction when the
capsule medical device is in the subject;
a magnetic guidance device that applies a magnetic field
to the permanent magnet to magnetically guide the capsule
medical device; and
an image display device that displays the in-vivo image
such that a direction of the intersection line conforms to an
upward and downward direction of a display screen.
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Appeal2013-010595
Application 12/497,997
REJECTIONS
Claims 1-152 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention. Final Act. 2.
Claims 1--4 and 7 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Yokoi (US 2003/0181788 Al, pub. Sept. 25, 2003). Final
Act. 3.
Claims 5 and 8-14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kawano (WO 2008/029460 Al, pub. Mar. 13, 2008).
Final Act. 5.
OPINION
The Examiner articulated a basis for rejecting claim 1 under 35 U.S.C.
§ 112, second paragraph, i.e., the recited vertical direction does not define a
finite number of planes. Final Act. 2. Although in addressing the rejection
under § l 02 Appellants make a passing statement simply asserting the
contrary (App. Br. 2; see also Ans. 6 (noting this statement and reiterating
the basis for the § 112 rejection)), Appellants do not address the merits of the
§ 112 rejection or indicate that they seek review of this rejection. See
Appeal Br. 4---6. We therefore treat any argument with respect to this ground
2 The Examiner objected to claims 6 and 15 as being dependent upon a
rejected base claim, but the Examiner indicated that they would be allowable
if rewritten in independent form including all of the limitations of the base
claim and any intervening claims. Final Act. 6 (including i-f 7.43 from
MPEP § 707.070)). Presumably, as discussed above, the Examiner intended
to include these claims in the rejection under§ 112 and the Examiner also
intended to indicate that rewriting or amending claim 1 to overcome the
rejection under 35 U.S.C. § 112, second paragraph, would also be required
for claims 6 and 15 to be allowed. See MPEP § 707.070) i-f 7.43.01.
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Appeal2013-010595
Application 12/497,997
of rejection as waived and summarily sustain this rejection. See, e.g., Hyatt
v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to
contest a ground of rejection to the Board, section [37 C.F.R. §
41.37(c)(iv)3] imposes no burden on the Board to consider the merits of that
ground of rejection on the basis of a representative claim. Rather, the Board
may treat any argument with respect to that ground of rejection as waived.
In the event of such a waiver, the PTO may affirm the rejection of the group
of claims that the examiner rejected on that ground without considering the
merits of those rejections."); see also In re Berger, 279 F.3d 975 (Fed. Cir.
2002) (in which the Board affirmed an uncontested rejection of claims under
35 U.S.C. § 112, second paragraph, and on appeal, the Federal Circuit
affirmed the Board's decision and found that the appellant had waived his
right to contest the indefiniteness rejection by not presenting arguments as to
error in the rejection on appeal to the Board).
We do not reach the merits of the prior-art rejections at this time. A
critical issue in the prior-art rejections involves the interpretation of the
language deemed to render the claims indefinite. App. Br. 11-12; Final Act.
3--4; Ans. 7-9. Before a proper review of the prior-art rejections can be
performed, the subject matter encompassed by the claims on appeal must be
reasonably understood without resort to speculation. Since claim 1 fails to
satisfy the requirements of the second paragraph of 35 U.S.C. § 112 we
reverse, proforma, the prior-art rejections. See In re Steele, 305 F.2d 859,
862 (CCPA 1962) (A prior art rejection cannot be sustained if the
hypothetical person of ordinary skill in the art would have to make
3 37 C.F.R. § 41.37(c)(iv) contains language previously found in
§ 1.192( c )(7).
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Appeal2013-010595
Application 12/497,997
speculative assumptions concerning the meaning of claim language.); see
also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
DECISION
The Examiner's rejection under 35 U.S.C. § 112 is summarily
affirmed. We reverse the prior-art rejections without reaching the merits
thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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